By Dr. Hadassa Waterman, Head of Biotech Department, Ehrlich & Fenster of Ehrlich Group.<\/p>\n
The President of the EPO has referred questions to the Enlarged Board of Appeal on the controversial issue of patent-eligibility of plants obtained by essentially biological processes. The referral is now pending as\u00a0case\u00a0G3\/19<\/a><\/strong>.\u00a0 This means that as long as the issue is pending with the EBA, examination of applications related to plants generated by essentially biological processes can be delayed for at least 1-2 years but typically even more.<\/p>\n The referral is an outcome of the decision of the\u00a0European Technical Board of Appeals in\u00a0case No. T1063\/18<\/strong>\u00a0 overturning a decision made by the examining division of the EPO (European Patent Office) to refuse a European patent application related to pepper plants on grounds that the application could not be approved under\u00a0Rule 28 (2) EPC.<\/strong>\u00a0The decision to refuse registration was appealed by the applicant and the TBA declared the recently amended\u00a0Rule 28(2) EPC\u00a0<\/strong>is void. According to a\u00a0recent\u00a0press release<\/a>\u00a0by the EPO, \u201cthe Contracting States expressed their concerns with regard to the legal uncertainty caused by decision T 1063\/18 and the case is now referred to the Enlarged Board of Appeal.\u00a0 This legal uncertainty probably elicited the intervention of the president of the EPO as discussed above.<\/p>\n Rule 28(2) EPC<\/strong>\u00a0was amended in 2017 to exclude plant products produced by essentially biological processes. This relates to\u00a0Article 53(b) EPC<\/strong>, which excludes essentially biological processes for the production of plants or animals from patentability. The European Enlarged Board of Appeal interpreted\u00a0Article 53(b) EPC<\/strong>\u00a0in\u00a0G 2\/12<\/strong>\u00a0(also known as the \u201cTomato II\u201d case, of the Volcani Institute, represented by our firm) and in\u00a0G 2\/13<\/strong>\u00a0(also known as the \u201cBroccoli II\u201d case) very narrowly, holding that\u00a0Article 53(b) EPC\u00a0<\/strong>should not prevent claims directed to plants or plant products produced by essentially biological processes.<\/p>\n The European Technical Board of Appeal\u2019s recent decision in\u00a0T1063\/18<\/strong>\u00a0was a major turn of events for the international Agritech industry renewing the hope for IP protection to developers and investors in the field.<\/p>\n Now this issue was referred to\u00a0the Enlarged Board of Appeal,\u00a0leading the EPO to impose a formal stay of prosecution on applications with claims involving Article 53(b) EPC, plants generated by essentially biological process. We advise our clients to stay updated and react to developments on the issue on a case by case basis. Sometimes, not all claims are affected so they can be examined while holding others in abeyance or file a divisional application to later pursue them. The new availability for a stay in the proceedings is probably the most cost effective to manage applications related to Article 53(b) EPC.\u00a0 Applicants should also\u00a0consider filing amicus curiae briefs when the Enlarged Board\u00a0of Appeal\u00a0opens up that option.<\/p>\n","protected":false},"excerpt":{"rendered":" By Dr. Hadassa Waterman, Head of Biotech Department, Ehrlich & Fenster of Ehrlich Group. The President of the EPO has referred questions to the Enlarged Board of Appeal on the controversial issue of patent-eligibility of plants obtained by essentially biological processes. The referral is now pending as\u00a0case\u00a0G3\/19.\u00a0 This means that as long as the issue … <\/p>\n